The appellate court had dismissed the appeal as moot on August 14, 2012, but Rolex asked that the court to modify its order and to vacate the Board's decision. The CAFC, in an Order dated November 1, 2012 [here], declined Rolex's request, but instead remanded the case to "allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board."

The CAFC took "no position as to whether the Board should grant any motion for vacatur or any motion to deem the trademark abandoned."

TTABlog note: Applicant withdrew its application on March 19, 2012. Since that mooted the appeal, is it fair to allow the TTAB judgment to stand when Rolex lost its opportunity to appeal the decision? Is this a case where the "unilateral" action by the victorious party below warrants vacatur?

5 Comments:

I don't know John. Is it fair for a litigant to wipe out an adverse precedential decision by causing the withdrawal of the underlying application? (and I don't know that is what happened here.)

I will confess I am not well versed in the law in this regard but since your question was "is it fair?" I would say that if Rolex caused the underlying application to be withdrawn by, for instance, settling with the applicant, then I see nothing unfair about letting the precedential decision stand. Reminds me of the story of the guy who having murdered his parents asked the Court to have mercy on an orphan.

Having read U.S. Bancorp, it seems that vacatur should be granted only of the application was withdrawn "through happenstance". That is if Rolex had nothing to do with making the witdrawal come about.

I think the encouragement of settlement is a very solid goal. But I think denying vacatur would better promote that goal. If the decision is vacated, what incentive is there for future litigants to settle before an adverse decision is granted? It would be a no-brainer to just roll the dice on a decision and then, if adverse, settle the case and get the decision vacated. If Rolex is denied vacatur, future litigants will really have to think long and hard before taking a case all the way to decision.

You cannot stop settlements from vacating decisions. What if on appeal, appellee files a brief concurring with appellant's brief? Is the appeals court going to uphold a trial court judgment against the stipulated wish of all parties before it? The precedential nature of the judgment is of no consequence to the parties; it is not binding on the parties because it is precedential, but because of the law of the case doctrine. The Board continues to cite as precedential prior decisions that were later vacated or reversed on other grounds.